By Gie van den Broek, ECTA Anti-Counterfeiting Committee Vice-Chair, LXA (NL)

In a preliminary Court decision, the Court of Rotterdam ruled on 19 October 2020 in favour of famous tobacco industry in a ‘goods-in-transit’-case.

The EU Trademark Regulation (Reg. 2017/1001), which entered into force in October 2017 rules in Article 9 par. 4:

‘Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall also be entitled to prevent all third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorisation a trade mark which is identical with the EU trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark.’

This article was applied correctly by the Court in Rotterdam on 19 October 2020 in a tobacco case, where goods were physically held in a customs warehouse in the Netherlands but PM found out in time that something was seriously wrong.

RPM is a Dutch wholesaler of, among other things, cigarettes, liqueurs and medical devices. Philip Morris (PM, the tobacco manufacturer) seized a container of tobacco sticks (original branded goods from Philip Morris) on a cargo ship bound for the Philippines. RPM filed a request to the Court to lift the seizure of the goods stored under T-1 status (custom status of goods in transit bound for release outside the EU). The destination of the goods, as confirmed by PM, was Armenia. PM pointed out that the goods could not be marketed anywhere else than in Armenia. However, RPM did not want to cooperate with transport to Armenia. PM pointed to the dubious route the tobacco sticks have travelled so far and more specifically to facts and circumstances surrounding the consignment’s transport to the Philippines. In addition, PM pointed to flaws in the documents. The suspect documents raised doubts about RPM's assertion that it owns the lot and that the lot indeed has T-1 status. The Court held that PM's fear was justified and that the consignment is ultimately intended, without PM’s consent, to be marketed elsewhere, resulting in infringing acts. RPM's course of action throughout the proceedings contributed to this judgment. RPM's claim is dismissed. The goods remain seized.

This case is the first time a Dutch Court applies the rule of Article 9 par. 4 of the Trademark Regulation that came into force three years ago, which enables Customs to also act against fraudulent goods in transit not intended for the EU but for non-EU countries.

RPM was sentenced to bear all legal costs on the side of PM, exceeding 12,000 Euro. This is only the beginning as it is the refusal of the Court to lift the seizure. Litigation on the merits of the cases will follow. To be continued.

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